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Suggested Citation:"Chapter 1 - Introduction." National Academies of Sciences, Engineering, and Medicine. 2015. Management Guide to Intellectual Property for State Departments of Transportation. Washington, DC: The National Academies Press. doi: 10.17226/22190.
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Suggested Citation:"Chapter 1 - Introduction." National Academies of Sciences, Engineering, and Medicine. 2015. Management Guide to Intellectual Property for State Departments of Transportation. Washington, DC: The National Academies Press. doi: 10.17226/22190.
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Suggested Citation:"Chapter 1 - Introduction." National Academies of Sciences, Engineering, and Medicine. 2015. Management Guide to Intellectual Property for State Departments of Transportation. Washington, DC: The National Academies Press. doi: 10.17226/22190.
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Suggested Citation:"Chapter 1 - Introduction." National Academies of Sciences, Engineering, and Medicine. 2015. Management Guide to Intellectual Property for State Departments of Transportation. Washington, DC: The National Academies Press. doi: 10.17226/22190.
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Page 4
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Suggested Citation:"Chapter 1 - Introduction." National Academies of Sciences, Engineering, and Medicine. 2015. Management Guide to Intellectual Property for State Departments of Transportation. Washington, DC: The National Academies Press. doi: 10.17226/22190.
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Page 5
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Suggested Citation:"Chapter 1 - Introduction." National Academies of Sciences, Engineering, and Medicine. 2015. Management Guide to Intellectual Property for State Departments of Transportation. Washington, DC: The National Academies Press. doi: 10.17226/22190.
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Suggested Citation:"Chapter 1 - Introduction." National Academies of Sciences, Engineering, and Medicine. 2015. Management Guide to Intellectual Property for State Departments of Transportation. Washington, DC: The National Academies Press. doi: 10.17226/22190.
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Page 7
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Suggested Citation:"Chapter 1 - Introduction." National Academies of Sciences, Engineering, and Medicine. 2015. Management Guide to Intellectual Property for State Departments of Transportation. Washington, DC: The National Academies Press. doi: 10.17226/22190.
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Suggested Citation:"Chapter 1 - Introduction." National Academies of Sciences, Engineering, and Medicine. 2015. Management Guide to Intellectual Property for State Departments of Transportation. Washington, DC: The National Academies Press. doi: 10.17226/22190.
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1 1.1 Background State departments of transportation (DOTs) construct, operate, maintain, and manage a highway system and its infrastructure to serve the various needs of the traveling public. They seek to enhance the safety, mobility, commerce, and livability goals of the public they serve. To that end, the DOTs’ concerns related to intellectual property (IP) have traditionally focused on avoiding high royalty premiums or avoiding putting their contractors in positions of liability for infringing proprietary IP of other parties (1). Certainly, when it comes to state DOT-funded research and development (R&D), DOTs expect to obtain a license to use any IP resulting from those efforts. However, aside from this license, DOTs have not traditionally needed to own IP, nor have they typically promoted and marketed IP developed by a contractor using DOT funding. A review of IP registration activity in the United States Patent and Trademark Office (USPTO) databases suggests that state DOTs have not registered very much IP. State DOTs hold titles to only about 25 patents. State DOTs have registered 213 live trademarks, but it appears that many of these are owned by just a few DOTs that are very active in pursuing trademarks. A search of the copyright database returns 66 registered copyrights. Given the volume of work and research in which state DOTs invest, it could be argued that there should be a greater representation of IP registration and IP ownership activity, especially if state DOTs are compared to public universities and laboratories that are supported by tax- payers. These institutions have mandates for developing and managing their IP. For example, by registering its IP and retaining ownership of the IP, a public institution may be able to benefit the public by licensing the IP to others. (For more information, see the section on licensing in Chapter 6 of this Guide.) Public benefits from licensing could range from very tangible royalty revenue to the state or less tangible economic activity flowing from marketplace application of the licensed IP (e.g., where marketplace partners need the security of an exclusive license to practice the IP). Clearly, however, most state DOTs are not doing much in this area. It is probably safe to suggest that IP management is within the scope of a state DOT’s responsi- bility. IP can potentially arise within many operational units of a state DOT, such as information technology, research, design, maintenance, operations, and public communication, just to name a few. Additionally, IP may be generated as a consequence of a number of actions and activities, including the following: • As a part of a contract with a private sector organization for the provision of goods or services. • As a result of everyday activities of staff and employees. • As a result of an in-house R&D program or project. • As a result of funding an external research program or project (2). C H A P T E R 1 Introduction

2 Management Guide to Intellectual Property for State Departments of Transportation To have an effective IP management program, it is important to first have a clear under- standing of the key success factors. A thorough understanding begins by answering the following questions: • What constitutes IP? Why is recognizing IP important? • What are IP rights? Why are they granted? • What is IP management? • How is IP effectively managed by a public entity? Why is effective IP management important for a public entity like a state DOT? The remaining sections of this chapter address these basic questions and present the background information necessary to interpret the concepts discussed throughout this Guide. 1.1.1 Why Should State DOTs Manage IP? Typically, IP management is not considered a mission-critical activity for state DOTs; therefore, not a lot of resources are allocated to IP management. This could reflect a belief at most state DOTs that their inventions and creative ideas are owned by the public and should be dedicated to the public domain (3). Dedicating IP to the public domain is one aspect of IP management, but IP management also encompasses: • Sharing innovations. • Collaborating with others. • Controlling or ensuring the freedom to use an invention or creative work (thus avoiding associated IP cost). • Maximizing the financial and nonfinancial benefits of the IP. • Leveraging IP for economic development. • Minimizing risks when using or exploiting IP. Dedicating IP to the public domain could run counter to some of the financial and economic benefits that could flow from retaining ownership of the IP and licensing it to private parties. Each of these aspects should provide a compelling reason for state DOTs to recognize the value of managing their IP. One benefit often reported in literature is that IP management fosters innovation and invention by driving investment toward society’s most pressing needs (4). IP is an asset that is protected by law and that allows those individuals and organizations that invested in the development and commercialization of the IP to receive benefits for their investments. The rights afforded by IP laws also give the owner(s) of those rights control over the use of the asset. The use of the rights embodied in the IP requires authorization from the owner of those rights. Another potential benefit of IP is the potential for new revenue creation as a result of licensing the IP or developing a product or service that embodies the IP and releasing the product for sale. (Licensing of IP is discussed in more detail in Chapter 6 of this Guide.) Proactively managing IP also carries risks, however. For example, if a state DOT plans to manage its IP, it must designate a unit, person, or external organization to oversee these activities, which requires both human capital and financial resources. The state DOT would need to prioritize activities to identify, track, document, and register their IP. Consequently, state DOTs may put themselves at risk and incur increased cost to the taxpayers if they fail to properly manage their IP. These risks may include: • Inappropriate or unauthorized use of state DOT IP. • Liability if a state DOT unknowingly uses others’ IP without consent (e.g., if a state DOT employee uses copyrighted material found on the Internet).

Introduction 3 At its core, IP management is about maximizing taxpayer value. For the state DOT manager, maximizing value is not only about making key investments in projects and activities to develop new technology, to develop new products, or to support innovations that ensure an efficient highway system. Maximizing value is also about recognizing and managing outcomes of these investments which, in some cases, may be potential IP assets. IP management is not solely about registering IP, but about the strategies used to understand the importance and value of IP to the state DOT. 1.1.2 Definition and Forms of IP The term intellectual property (IP) refers to a broad spectrum of property interests. As a legal term, it has been defined as a category of intangible rights protecting commercially valuable products borne of the human intellect. This definition does not imply that IP encompasses abstract ideas—IP can only arise for tangible physical embodiments of an idea. For example, an invention must be reduced to practice to qualify for patent protection, and a work of author- ship must be fixed in a tangible medium of expression to qualify for copyright protection (5, 6). Multiple forms of IP protection exist, as do multiple strategies for managing IP that might be applicable to any given invention or creation. For example, certain aspects of a single software product could be protected by patents, trade secrets, copyrights, and trademarks (7). Given the variety of strategies and types of protection, it is important to understand the reasons for pursuing IP protection. The four primary forms of IP are patents, copyrights, trademarks, and trade secrets. These forms of IP cover the creative outputs and activities in all fields of human endeavor. This may include works of literature, works of art, and scientific works, for example. These works may be scientific discoveries, industrial designs, software, construction or maintenance equipment, work zone safety systems, engineering designs, or a host of other items. Table 1 lists some examples of highway transportation-related IP. This list is not exhaustive and it does not suggest that these inventions/creations are actually protected as IP; rather, it identifies categories of inventions or creations potentially found within a state DOT and lists the types of IP protection that may be available for those categories of inventions/creations. 1.1.3 IP Ownership Rights IP owners, like owners of other types of property, have certain rights. These rights can be sold, bought, licensed, gifted, traded, or used as a security. These rights, in essence, restrict others from using the IP without the consent of, authorization of, and/or remuneration to the creator or owner (typically via a licensing agreement). The law that governs and protects the rights of the IP owner is meant to provide inventors an incentive for disclosing their invention or creation. The incentive is a limited-life monopoly over the control of their IP (8). Such exclusionary rights afforded by IP protection are anticipated to give the owner or creator an inducement to disclose a work or introduce it into the marketplace, as well as the potential opportunity to benefit from his or her work, both financially and otherwise. (See Chapter 6 for more detailed information about licenses.) 1.1.4 What Is IP Management? IP rights are critical legal and strategic instruments for nurturing innovation. Managed judiciously, they balance private rights and public necessity in a manner that can encourage investments in addressing the most crucial needs and challenges in society. A broadly accepted definition of IP management is the devising of and use of strategies and tactics to realize value Intellectual property (IP) refers to the creative activities of literary, artistic, and scientific works, performances of performing artists, and broadcasts; inventions in all fields of human endeavor; scientific discoveries; industrial design; trademarks, service marks, and commercial names, designations, protection against unfair competition and all other rights resulting from intellectual activity in the industrial, scientific, literary, or artistic fields. —World Intellectual Property Organization (WIPO), 1967, Article 2

4 Management Guide to Intellectual Property for State Departments of Transportation from investments that have led to protectable IP assets (9). As has been noted, the value returned to the owner from managing IP may be financial or nonfinancial. It is anticipated that proactive IP management will improve state DOTs’ ability to: • Maintain access to research results derived from funded projects or employee inventors and creators. – Document and track the outputs/deliverables of DOT activities (e.g., databases, spreadsheets) to identify what types of IP may be available. – Ensure that the contract language between the DOT and any contractor explicitly provides appropriate access to all IP generated from DOT funding. – Use employment agreements to ensure that the DOT maintains access to works/inventions created by employees. • Protect the interest and IP rights of others, including contractors and employees. – Respect the IP rights of others. It is important that appropriate remuneration be given for the use of others’ IP. – Reward the creativity of employees. One way of doing so may be by having a process by which the DOT would help apply for IP protection for creative works/inventions by employees. Perhaps the employee could share in any revenue generated from licensing the IP. Types of IP Protection Categories of Inventions/Creations Potential Examples at a State DOT Rationale for Protection Patent • Products • Devices • Software • Test methods • Deicing systems • Work zone protection systems • AASHTOWare (software) • Restrict the rights of other to use, sell, make, or import the claimed invention • Encourage investment and innovation in a particular area Copyright • Software • Documents • Training materials • Reports • Photographs • Websites • Jingles • State maps • State DOT websites • AASHTOWare • State maps created by state DOTs • ASTM Test Standards • AASHTO bridge pavement and highway design documents • Control access to creative expression • Exclude others from reproducing, adapting, distributing, performing, or displaying a creative work Trademark • Logos • Acronyms • Symbols • Slogans • Slogans (e.g., Texas DOT’s anti-litter campaign’s “Don’t Mess with Texas”), or the national seatbelt enforcement campaign’s “Click it or Ticket”) • AASHTOWare • Signal the level of quality of a creation • Protect public from being misled by similar products Trade secret • Products for which the value is based on the secrecy of the information • Methods and procedures for managing snow- covered roads • Necessary when the secrecy of information makes it valuable Table 1. Types of potential IP found at a state DOT.

Introduction 5 • Reduce the likelihood of IP infringement claims against state DOT contractors by other contractors or third-party owners of IP assets. – Ensure that contractors understand and follow specific procedures to avoid accidental infringement of IP. State DOTs enjoy sovereign immunity from copyright and patent infringement actions, as discussed in detail in Chapter 6. Unlike the federal government, however, state DOTs cannot immunize their contractors and cannot provide authorization and consent for the infringement of others’ IP. – Ensure remunerations for use of others’ IP. DOTs need to track the use and implementation of third-party IP, both internally when used by employees and on projects performed by contractors. • Identify contributions to the field by DOTs, including contractors and employee inventors. – Promote creative and intellectual contributions from staff and contractors. IP management can help the DOT to identify the contributions of its contractors and employees. This may be an additional way to reward significant contributions and hard work. • Provide a source for outbound licensing/grants of rights to IP. – Support a licensing program. IP management provides a framework that supports the DOT’s efforts to track and identify potential valuable IP. By knowing what IP it owns, a DOT can establish a mechanism for licensing IP to other public agencies or private organizations. The license could be for a royalty or be royalty-free. Licensing is addressed in greater detail in Chapter 6. • Secure monetary compensation for use of the IP owned by the DOT. – Collect a royalty for use of IP. State DOTs can benefit from IP that they own by licensing it to one or more third parties under a licensing agreement that provides for a royalty payment, as discussed in greater detail in Chapter 6. – Provide additional revenue to the state. By owning IP, the state DOT can create a new revenue stream that can benefit investments in other areas. • Legally protect a presence in the market space. – Maintain the integrity, quality, and reputation of state-funded IP. Proper IP management provides a mechanism by which the state DOT can maintain control over how its IP is used. This can help to maintain the quality, integrity, and reputation of both the IP and the agency. • Encourage investment in technology development and commercialization. – Trigger further development and commercialization. The exclusionary rights given by IP protection help reduce some of the risk and uncertainty around investing in commercial- izing IP. – Support economic development activities. Commercialization activities are very important to both the state and local economy. • Avoid becoming “captive” to incumbent contractors with proprietary technology. In summary, state DOT investments often result in new and useful processes, products, and technologies, many of which may have unrealized value to both the agency and the public it serves. Widespread implementation of technologies is an important outcome for state DOT programs (10). Although the present legal framework for managing IP may not be perfect, it is able to support advancing knowledge creation, knowledge transfer, and innovation (11). 1.2 Framework for IP Management Although no one-size-fits-all approach will work for state DOT IP management, this Guide elaborates on some of the key concepts surrounding IP management and provides a frame- work that is flexible enough for any state DOT to use in meeting its IP management needs and objectives.

6 Management Guide to Intellectual Property for State Departments of Transportation Figure 1 shows types of intellectual capital and assets that subsequently can be transformed and converted into IP. That is, intellectual capital resources convert to intellectual assets, which may then be managed as IP. To be effective, an IP management program must address four key dimensions: legal, technical, organizational, and economic (13). Figure 2 shows the framework’s broad areas and the factors to consider within each area. 1.2.1 The Legal Dimension The legal dimension is concerned with controlling and identifying protectable assets. It is important to be aware of issues surrounding IP laws and the expressed rights and privileges granted to IP owners. Also, it is important to document and review the use of third-party IP to minimize the risk of infringement. It is necessary to understand the principal forms of IP and Figure 1. Model for IP creation (12). Figure 2. IP management factors.

Introduction 7 which are applicable to specific types of inventions. It is necessary to establish a formal disclosure process to screen the results and deliverables from each activity/project to identify protectable assets. Finally, it is necessary to have model contracts to provide guidance regarding potential licensing negotiations and IP ownership issues. 1.2.2 The Technical Dimension The technical dimension is concerned with understanding the field of application of a protect- able asset. The fields of application will likely affect which forms of IP protection apply and are considered. Additionally, it is important to understand the likelihood of the IP protection being adopted and implemented. The key is to address whether identifying, protecting, and managing a given asset as IP is worth the investment. It is important to understand if the target users have the complementary assets or organizational structure to successfully practice or use the IP (14). 1.2.3 The Economic Dimension The economic dimension is concerned with the economic impact of IP to the agency, general public, contractors, and other potential IP stakeholders. IP management can be an expensive endeavor. There are costs to acquire and maintain the protection (e.g., patent prosecution costs, maintenance costs). These life-cycle costs will have a significant influence on the state DOT’s IP management strategy (e.g., IP audit, IP inventory). If IP is licensed, a cost is associated with the license negotiation. After the license has been signed, a cost is associated with monitoring for compliance. A cost-benefit analysis that examines all options (e.g., patent life-cycle cost, royalties from commercialization, or dedicating the IP to the public domain) will be a key decision factor in pursuing IP protection. (For a more detailed discussion of IP audits, see Chapter 2; for more information on licensing, see Chapter 6.) 1.2.4 The Organizational Dimension The organizational dimension is concerned with establishing an IP management agenda and approach (i.e., the organization’s IP management policy). At minimum, this includes educating and training employees, as well as contractors, on IP issues that are critical to the IP management policy. Additionally, employees need to know how to recognize IP that may be of value to the organization and to understand their role in managing it, consistent with the IP management policy. Some state DOTs may have the discretion to establish the IP management policy for their organization, whereas other state DOTs may be subject to an IP management policy established by the state government. Furthermore, the IP management policy for a state DOT must be con- sistent with state statutes and regulations governing IP with respect to state DOTs. (This topic is discussed in greater detail in Chapter 6.) It is expected that this framework will help the state DOT focus on the activities that are most important in supporting a successful IP management program. 1.3 Research Objective and Scope The overall objective of NCHRP Project 20-89 was to develop guidelines to inform and to support IP management within state DOTs. This Management Guide to Intellectual Property provides approaches and strategies that DOTs can implement to manage their IP portfolios. It is important to point out that the IP management framework discussed in this Guide continues to evolve; however, the best practices outlined are taken from proven structures, processes, and

8 Management Guide to Intellectual Property for State Departments of Transportation approaches that represent some of the most well-known ideas on managing IP to date. No matter where a given agency currently falls along the IP management spectrum, it is anticipated that this Guide will serve as a resource for decision-makers and practitioners to institutionalize IP management. 1.4 Application of IP Management in the State DOT Successful IP management requires commitment from all levels within the organization. IP management is about employing strategies and tactics that support the overall goal of the state DOT, which is to put the related innovations into practice for the benefit of the public. As with most business decisions, resources are limited. State DOTs need a structure to guide decision- making and the allocation of resources for IP management activities. Several key elements must be addressed, including: • An overall IP policy. Policies that promote IP management within the state DOT should give priority to advancing the mission and vision of the agency. All other policy components should flow from this mission-driven approach. • Which unit, individual, or organization will have overall responsibility for managing IP. State DOTs can manage these services internally or under contract with an outside consultant or service provider. Depending on the legal framework within which a state DOT operates, the state DOT also might be able to opt to participate in a consortium (perhaps composed of multiple state DOTs or composed of a selection of executive agencies within a single state). The consortium would have agreed-upon management responsibilities with respect to specified IP of the participating state DOTs (15). • How to create a culture of IP management. To have a successful IP management program, everyone in the organization must be informed of the importance of IP. Training must be available to inform personnel about IP rights and applications. • A mechanism for identifying, submitting, and tracking inventions, ideas, and concepts. In most mature IP management programs, a disclosure form is the entry point for initiating a review of a new idea, invention, or concept to assess whether it warrants or even qualifies for IP protection. • A process for screening, analyzing, and reviewing inventions, ideas, and concepts. After receiving a disclosure, a review process is needed. This review process will examine the merits of the invention/creative expression/creation, enabling a decision to be made whether to pursue IP protection and, if so, identifying the appropriate form of IP protection to pursue. • Parameters for pursuing IP protection. Each type of IP has its own rules, laws, requirements, and governance. When deciding on the appropriate form(s) of IP protection to pursue, it is important to understand these differences and to set appropriate expectations with regard to costs and the ability to meet the requirements needed to obtain that protection. • Disposition of IP rights. Will licensing IP rights be a significant component of the state DOT’s strategy? The disposition of IP rights includes defining the mechanism by which others can obtain the rights to use IP owned by the state DOT; deciding whether dedicating most IP to the public domain will be the standard policy and protecting IP will occur on rare occasions; and deciding if IP rights should be given to an employee inventor/creator or to a contractor. • Policies for managing any revenue generated from IP management. State DOTs may offer royalty-generating license opportunities to third parties. For those state DOTs, having a mecha- nism in place to manage any revenue received by the state DOT is important. The policies should clarify how funds will be used to support activities in the state and support the taxpaying public, as well as how any revenues will be shared with the inventors, creators, and so forth. • Defenses against misappropriation of IP rights. To be effective in IP management, a state DOT must be willing and able to defend its IP rights from infringers. If the DOT chooses not

Introduction 9 to defend its rights, it runs the risk of losing those rights. On the other hand, because a state DOT’s mission is to perform activities for the public good, the DOT must recognize that, in some cases, defending the agency’s IP rights could have a direct, negative impact on the public. • Tools for measuring the success of IP management initiatives. To assess whether the state DOT is reaching its IP management goals, it is important to have metrics and tools in place for measuring the success of IP management efforts. 1.5 Organization of the Guide This Guide is organized into 10 chapters that elaborate on the crucial components to developing and executing an IP management program. Chapter 1 provides a general introduction and cursory review of the material that will be discussed in the later chapters. Chapter 2 reviews the key elements for IP management. A flow diagram illustrates how these elements are linked to create a complete IP management system. Chapter 3 discusses the needs and requirements to establish a unit, personnel, or contractor to be responsible for the state DOT’s IP management activities. Chapter 4 focuses on the process of disclosing, screening, and reviewing ideas, concepts, and inventions submitted by employees and contractors. Chapter 5 introduces the four primary forms of IP protection: patent, copyright, trademark, and trade secret. This chapter defines each form of IP protection and highlights key laws and statutes from which the IP rights derive. Chapter 6 discusses some of the options afforded to the owners of IP property rights and how others can acquire rights to use state DOT IP. This chapter focuses primarily on the importance of planning to balance the interests of state DOT stakeholders in relation to IP. Chapter 7 examines what happens if a state DOT decides to sell or license its IP for payment. Mechanisms and procedures are needed for managing how the revenue will be used for the good of the general public. Chapter 8 discusses metrics and techniques for assessing the effectiveness of an IP program. IP management has many potential benefits to a state DOT and the public it serves. It is important to have a mechanism for measuring whether the program is reaching the goals outlined by the state DOT. Chapter 9 presents four case studies that highlight the concepts and strategies discussed throughout the document. Chapter 10 provides a demonstration of the IP management process. This chapter consid- ers four types of IP assets: (1) an electromechanical product that is patented; (2) a slogan that is trademarked; (3) copyrighted material that is dedicated to the public domain; and (4) algorithms that are to be maintained as a trade secret. The goal of this chapter is to show how each type of IP may be managed within a state DOT.

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TRB’s National Cooperative Highway Research Program (NCHRP) Report 799: Management Guide to Intellectual Property for State Departments of Transportation documents guidance on how agencies can manage the copyrights, patents, and other intellectual property that may be used or produced as a byproduct of the agency’s usual business activities.

In addition to the report, a PowerPoint summary of the research is available online, as well as a webinar that was held on this topic.

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